PRECEDENTIAL OPINION

Pursuant to Board of Patent Appeals and Interferences Standard Operating Procedure 2. the opinion below has been designated a precedenti al opinion.

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES

Ex parte JOHN F. JELLA

Appeal 2008- 16 19 Application 101836,805 Technology Center 3600

Decided: November 3,2008

Before MICHAEL R. FLEMING, Chief Administrative Patent Judge, and WILLIAM F. PATE, 111, SALLY C. MEDLEY, LINDA E. HORNER, and JOSEPH A. FISCHETTI, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

John F. Jelli (Appellant) seeks our review under 35 U.S.C. 5 134 of

the final rejection of claims 1, 6,7, 12, 13, and 15, which are all of the

pending claims. We have jurisdiction under 35 U.S.C. 5 6(b) (2002).

Appeal No. 2008-1619 Appl. No. 101836,805

SUMMARY OF DECISION

We AFFIRM.

THE INVENTION

The Appellant's claimed invention relates to raised panel door

sections for overhead garage doors (Spec. 1:25-26). Claim 1, reproduced

below, is representative of the subject matter on appeal.

1. A door section for an overhead garage door comprising :

a sheet metal layer having a finished height of substantially twenty-eight inches; and

and [sic] support members coupled to first and second lateral edges of said sheet metal layer.

THE REJECTION

The Examiner relies upon the following as evidence of

unpatentability :

Geoffrey US 3,891,021 Jun. 24, 1975 Martin US 4,284,119 Aug. 18,1981 Dykes US 5,598,667 Feb. 4, 1997

The Appellant seeks our review of the rejection of claims 1, 6,7, 12,

13, and 15 under 35 U.S.C. 5 103(a) as being unpatentable over Martin in

view of Dykes andlor Geoffrey.

Appeal No. 2008-1619 Appl. No. 101836,805

ISSUE

The issue before us is whether the Appellant has shown the Examiner

erred in determining that a door section having a finished height of

substantially twenty-eight inches would have been obvious to one having

ordinary skill in the art at the time of the invention in view of the prior art.

FINDINGS OF FACT

We find that the following enumerated findings are supported by at

least a preponderance of the evidence. Ethicon, Znc. v. Quigg, 849 F.2d

1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for

proceedings before the Office).

1. Martin discloses an overhead garage door having a section

assembly 10 including a sheet metal layer 12 and end support

members 14 coupled to first and second lateral edges of the sheet

metal layer (Martin, col. 4,ll. 14-17, 21-23, and 54-57;

Figs. 1 & 2).

2. Martin does not disclose that the sheet metal layer has a finished

height of substantially twenty-eight inches.

3. Dykes relates to a panel cover system for resurfacing existing

overhead garage doors (Dykes, col. 2,ll. 1 1 - 14).

4. Dykes describes that overhead door heights of seven feet are fairly

common (Dykes, col. 3,ll. 38-39).

5. Dykes discloses a door structure 4 having four panels 18a, 18b,

18c, and 18d (Dykes, col. 3,ll. 23-24).

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6. Dykes further describes that "overhead doors are available with

four, five and six panels, and could be manufactured with other

numbers of panels. Moreover, overhead doors may comprise

single panels" (Dykes, col. 3,ll. 42-45).

7. Thus, Dykes describes common, commercially-available door

heights and panel numbers in the construction industry.

8. One having ordinary skill in the art would understand the

disclosure in Dykes to mean that overhead doors having four, five

or six panels are commercially available in the industry, but it is

also possible to construct doors with other numbers of panels,

including one or more panels.

9. One having ordinary skill in the art would not infer from the

disclosure that three panel doors are not available because they

would not work or that it is impossible to construct standard seven

foot high garage doors having three panels.

10. At most, Dykes' omission of a specific reference to three panel

doors would be construed by one having ordinary skill in the art to

mean that doors having three panel sections were not "standard" in

the construction industry.

11. One having ordinary skill in the art would understand Dykes to

suggest that it is possible to construct standard seven foot high

garage doors with any number of panels desired, including three

panels.

Appeal No. 2008-1619 Appl. No. 101836,805

12. Geoffrey illustrates in Figure 2 "a portion of the door of FIG. 1"

which "includes at least three panel sections 24, 26 and 28"

(Geoffrey, col. 4,ll. 6-7 and col. 5,ll. 33-35; Fig. 2).

13. Figure 1 of Geoffrey shows a door having four panel sections

(Geoffrey, Fig. 1).

14. Further, the uppermost panel section 24 and the lowermost panel

section 28 of Figure 2 are shown with indefinite borders indicating

that additional panel sections are positioned above or below the

panel sections 24 and 28, respectively (Geoffrey, Fig. 2).

15. Thus, Geoffrey does not disclose a three panel section garage door.

PRINCIPLES OF LAW

Obviousness

"Section 103 forbids issuance of a patent when 'the differences

between the subject matter sought to be patented and the prior art are such

that the subject matter as a whole would have been obvious at the time the

invention was made to a person having ordinary skill in the art to which said

subject matter pertains."' KSR Znt'l Co. v. Telejlex Znc., 127 S. Ct. 1727,

1734 (2007). The question of obviousness is resolved on the basis of

underlying factual determinations including (1) the scope and content of the

prior art, (2) any differences between the claimed subject matter and the

prior art, (3) the level of skill in the art, and (4) where in evidence, so-called

secondary considerations. Graham v. John Deere Co., 383 U.S. 1, 17- 18

(1 966). See also KSR, 127 S. Ct. at 1734 ("While the sequence of these

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questions might be reordered in any particular case, the [Graham] factors

continue to define the inquiry that controls.")

Secondary Considerations

To be given substantial weight in the determination of obviousness or

non-obviousness, evidence of secondary considerations must be relevant to

the subject matter as claimed, and therefore the examiner must determine

whether there is a nexus between the merits of the claimed invention and the

evidence of secondary considerations. Ashland Oil, Znc. v. Delta Resins &

Refractories, Znc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475

U.S. 10 17 (1 986). In particular, an applicant asserting secondary

considerations to support its contention of non-obviousness bears the burden

of proof of establishing a nexus between the claimed invention and evidence

of secondary considerations. For example, in the case of evidence of

commercial success, the Federal Circuit has acknowledged that the applicant

bears the burden of establishing a nexus, stating:

In the ex parte process of examining a patent application, however, the PTO lacks the means or resources to gather evidence which supports or refutes the applicant's assertion that the sale constitutes commercial success. C.$ Ex parte Remark, 15 USPQ2d 1498,1503 (Bd. Pat. App. & Int. 1990)(evidentiary routine of shifting burdens in civil proceedings inappropriate in ex parte prosecution proceedings because examiner has no available means for adducing evidence). Consequently, the PTO must rely upon the applicant to provide hard evidence of commercial success.

Appeal No. 2008-1619 Appl. No. 101836,805

In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also In re GPAC,

57 F.3d 1573, 1580 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482

(Fed. Cir. 1994) (Evidence of commercial success of articles not covered by

the claims subject to the obviousness rejection was not probative of non-

obviousness).

Objective evidence of non-obviousness, including commercial

success, must be commensurate in scope with the claims. In re Tzfin, 448

F.2d 791 (CCPA 197 1) (evidence showing commercial success of

thermoplastic foam "cups" used in vending machines was not commensurate

in scope with claims directed to thermoplastic foam "containers" broadly).

In order to be commensurate in scope with the claims, the commercial

success must be due to claimed features, and not due to unclaimed features.

Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990),

afd, 959 F.2d 226, 228 (Fed. Cir. 1992) (Features responsible for

commercial success were recited only in allowed dependent claims, and

therefore the evidence of commercial success was not commensurate in

scope with the broad claims at issue.). An inventor's opinion as to the

purchaser's reason for buying the product is insufficient to demonstrate a

nexus between the sales and the claimed invention. In re Huang, 100 F.3d

135, 140 (Fed. Cir. 1996). Further, gross sales figures do not show

commercial success absent evidence as to market share, Cable Electric

Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir. 1985), or

as to the time period during which the product was sold, or as to what sales

Appeal No. 2008-1619 Appl. No. 101836,805

would normally be expected in the market, Exparte Standish, 10 USPQ2d

1454,1458 (BPAI 1988).

ANALYSIS

The Appellant states that "[tlhe limitation as to the finished height of a

panel, as recited in the original claims, was and remains the critical

limitation" in the claims (App. Br. 4). Independent claim 1 recites "a sheet

metal layer having a finished height of substantially twenty-eight inches."

The Appellant does not present arguments for the separate patentability of

claims 1, 6,7, 12, 13, and 15. Instead, the Appellant's arguments are

directed generally to "the claimed invention" (App. Br., passim; Reply Br.,

passim). Thus, we select claim 1 as the representative claim, and claims 6,

7, 12, 13, and 15 stand or fall with claim 1. 37 C.F.R. 5 41.37(c)(l)(vii)

(2007).

We now examine each of the Graham factors as they apply to claim 1.

Scope and Content of the Prior Art

The Examiner found that Martin discloses an overhead garage door

having a section assembly including a sheet metal layer and end support

members coupled to first and second lateral edges of the sheet metal layer

(Ans. 3; Fact 1). The Appellant did not contest the Examiner's findings as

to the scope and content of Martin.

Dykes relates to a panel cover system for resurfacing existing

overhead garage doors (Fact 3). Dykes describes that overhead door heights

of seven feet are fairly common (Fact 4). Dykes discloses a door having

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Appeal No. 2008-1619 Appl. No. 101836,805

four panels and further describes that commercially-available overhead

doors in the construction industry include doors with panels having four,

five, and six panels (Facts 5-7). Dykes further teaches that overheard doors

"could be manufactured with other numbers of panels" including a door

comprising a single panel (Fact 7). One having ordinary skill in the art

would understand this disclosure in Dykes to mean that overhead doors

having four, five or six panels are commercially-available in the industry,

but it is also possible to construct doors with other numbers of panels,

including one or more panels (Fact 8). One having ordinary skill in the art

would not infer from this disclosure that three panel doors are not available

because they would not work or that it is impossible to construct standard

seven foot high garage doors having three panels (Fact 9). At most, Dykes'

omission of a specific reference to three panel doors would be construed to

mean that they were not "standard" in the construction industry (Fact 10).

Thus, one having ordinary skill in the art would understand Dykes to suggest

that it is possible to construct standard seven foot high garage doors with any

number of panels desired, including three panels (Fact 11).

The disclosure illustrated in Figure 2 of Geoffrey shows a portion of

a four panel overhead garage door (Facts 12-14).

Dzflerences between the Prior Art and the Claimed Invention

Martin does not disclose that the finished height of the sheet metal

layer is substantially twenty-eight inches (Fact 2). Further, we disagree with

the Examiner's reading of Geoffrey and find that Geoffrey does not disclose

a three panel section garage door (Fact 15). Although Dykes does not state

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Appeal No. 2008-1619 Appl. No. 101836,805

that three panel section garage doors were commercially-available at the

time of the invention, Dykes does suggest that it was possible to construct a

standard seven foot high garage door with any number of panels desired,

including three panels (Facts 8- 1 1).

Level of Ordinary Skill in the Art

Neither the Examiner nor the Appellant has addressed the level of

ordinary skill in the pertinent art.' "The person of ordinary skill in the art is

a hypothetical person who is presumed to know the relevant prior art." In re

GPAC, 57 F.3d 1573, 1579 (Fed. Cir. 1995) (citing Custom Accessories, Znc.

v. Jefrey-Allan Zndus., Znc., 807 F.2d 955, 962 (Fed. Cir. 1986)). We will

therefore consider the cited prior art as representative of the level of ordinary

skill in the art. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.

2001) ("[Tlhe absence of specific findings on the level of skill in the art does

not give rise to reversible error 'where the prior art itself reflects an

appropriate level and a need for testimony is not shown"') (quoting Litton

Zndus. Prods., Znc. v. Solid State Sys. Corp., 755 F.2d 158, 163 (Fed. Cir.

1985).

Prima Facie Case of Obviousness

In view of the findings of fact above, we review the Examiner's

rejection of the claims under 35 U.S.C. 5 103(a) as unpatentable over Martin

and Dykes or Geoffrey.

1 The Appellant characterizes the six Declarants as "having more than ordinary skill in the art" (Reply Br. 11). The Appellant does not, however, proffer a level of skill for one having ordinary skill in this art.

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Appeal No. 2008-1619 Appl. No. 101836,805

element for another known in the field, the combination must do more than

yield a predictable result.").

We further find that market pressure existed in the garage door

industry to create a new design trend by updating the look of garage doors to

spur additional sales in the industry. In particular, the declarations submitted

by the Appellant acknowledged that "[tlhe appearance of a garage door is a

matter of great concern to the customer. Architects, design specifiers,

builders, and homeowners desire a garage door that looks different from the

traditional garage doors that are currently being manufactured" (Declaration

Under 37 C.F.R. 5 1.132 of William C. Mohler, dated April 6, 2004

("Mohler Decl."), ¶5; Declaration Under 37 C.F.R. 5 1.132 of Steven J.

Folk, dated April 26, 2004 ("Folk Decl."), ¶5; Declaration Under 37 C.F.R.

5 1.132 of Gregory David Schults, dated March 3 1, 2004 ("Schults Decl."),

¶5; Declaration Under 37 C.F.R. 5 1.132 of Michael R. Matuszek, dated

April 3, 2004 ("Matuszek Decl."), ¶5; and Declaration Under 37 C.F.R.

5 1.132 of James C. Clem, dated March 22, 2004 ("Clem Decl."), ¶5). The

Appellant himself acknowledged:

A garage door is a highly visible feature of a home. In many cases, the garage door comprises more than 60% of the homes [sic] front elevation. As such, its appearance is a matter of great concern for architects, developers, home designers, city planners, builders, and ultimately, the end user, for the entire life of the garage door. As steel overhead doors have flooded the industry, the need has arisen for a deviation from existing garage door designs. In other words, a garage door that

Appeal No. 2008-1619 Appl. No. 101836,805

looks different from the traditional raised panel steel garage doors that are currently inundating the market.

(Declaration Under 37 C.F.R. 5 1.132 of John F. Jelli, dated April 5, 2004

("First Jelli Decl."), ¶5).

The Court in KSR noted that "[wlhen a work is available in one field

of endeavor, design incentives and other market forces can prompt variations

of it, either in the same field or a different one. If a person of ordinary skill

can implement a predictable variation, 5 103 likely bars its patentability."

Id. Changing a conventional seven foot high overhead garage door from a

four panel section door to a three panel section door is nothing more than a

predictable variation sparked by design incentives in the hope that a new

look to the door would result in increased sales. In our minds, this is an

example of market demand driving a design trend, and the Supreme Court in

KSR warned against granting patent protection to advances such as this that

would occur in the ordinary course without real innovation:

In many fields it may be that there is little discussion of obvious techniques or combinations, and it often may be the case that market demand, rather than scientific literature, will drive design trends. Granting patent protection to advances that would occur in the ordinary course without real innovation retards progress and may, in the case of patents combining previously known elements, deprive prior inventions of their value or utility.

KSR, 127 S. Ct. at 1741. The Supreme Court further noted:

When there is a design need or market pressure to solve a problem and there are a finite number of

Appeal No. 2008-1619 Appl. No. 101836,805

identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense.

Id. at 1742. In this case, Dykes outlines a finite number of predictable

solutions because it provides that doors having four, five, or six panels are

conventional in the industry, and it provides that doors can be made with any

other number of panels, including a single panel. Encompassed within a

finite number of identified, predictable solutions in Dykes is to make a door

with two or three panels, and the Appellant has not sufficiently shown that it

was outside the technical grasp of a person of ordinary skill to pursue these

options. Thus, the claimed door section with a twenty-eight inch finished

height is not the product of innovation but of ordinary skill and common

sense. As such, the Examiner has shown a prima facie case of obviousness

of the claimed door section having a finished height of substantially twenty-

eight inches in view of the prior art.

The Appellant argues that when viewing the references in

combination "it would be obvious to not try to [make a three-panel seven-

foot door]" (App. Br. 10). An "obvious to not try" argument is the same as

an argument that one or more of the references teach away from the claimed

invention. The Appellant argued that Dykes teaches away from making a

three panel section garage door by virtue of its explicit omission of three

panel sections from its listing of commercially-available panel section doors

(App. Br. 7). Whether a reference teaches away from a claimed invention is

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a question of fact. In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005). "A

reference may be said to teach away when a person of ordinary skill, upon

reading the reference, . . . would be led in a direction divergent from the path

that was taken by the applicant." In re Haruna, 249 F.3d 1327, 1335 (Fed.

Cir. 2001) (quoting Tec Air, Znc. v. Denso Mfg. Mich. Znc., 192 F.3d 1353,

1360 (Fed. Cir. 1999)). We disagree with the Appellant's reading of Dykes

for the reasons provided supra (Facts 6-1 1). As such, we are not persuaded

by the Appellant's argument that it would be obvious to not try to make a

three-panel seven-foot door.

Inasmuch as we have concluded that the subject matter of Appellant's

claims 1, 6,7, 12, 13, and 15 is prima facie obvious, and because Appellant

has furnished evidence in rebuttal of obviousness, we now turn to consider

this evidence. When such evidence is presented, it is our duty to consider all

evidence anew. See, e.g., In re Eli Lilly and Co., 902 F.2d 943 (Fed. Cir.

1990). We are also mindful that objective evidence of non-obviousness in

any given case may be entitled to more or less weight depending on its

nature and its relationship with the merits of the invention. See Stratoflex

Znc. v. Aeroquip Corp., 713 F.2d 1530 (Fed. Cir. 1983).

Secondary Considerations

We recognize that evidence of secondary considerations, such as that

presented by the Appellant, must be considered in route to a determination

of obviousnesslnon-obviousness under 35 U.S.C. 5 103. Accordingly, we

consider anew the issue of obviousness under 35 U.S.C. 5 103, carefully

Appeal No. 2008-1619 Appl. No. 101836,805

evaluating and weighing both the evidence relied upon by the Examiner and

the objective evidence of non-obviousness provided by the Appellant.

The Appellant submitted declarations from those in the garage door

industry who attested that they were skeptical that a steel garage door

product with a twenty-eight inch section height would work satisfactorily

because the size of the sections would be too big to move smoothly on the

door tracks, and that they were surprised at how smoothly the door moved

on the tracks when it was demonstrated to them (Mohler Decl. ¶¶8, 9; Folk

Decl. ¶¶8, 9; Schults Decl. ¶¶8, 9; Matuszek Decl. ¶¶8, 9; and Clem Decl.

¶¶8, 9).

We must first examine whether the Appellant met its burden of

establishing a nexus between the claimed invention and the evidence of

secondary considerations. In re Huang, 100 F.3d at 139-40. The evidence

of skepticism of others provided by the Appellant has no connection to the

claimed invention. In particular, in each case the declarants' skepticism was

based on "concerns that the size of the sections would be too great to move

smoothly on the door tracks." As explained by the Appellant in the Appeal

Brief, this skepticism was based on the belief in the industry that a twenty-

eight inch panel section would not move smoothly as it travels through the

radius of a conventional door track (App. Br. 20). The Appellant's first

declaration further explains that "sectional overhead garage doors are

typically engineered to operate in tracks that incorporate ten, twelve, and

fifteen inch radius tracks" and that "conventional wisdom in the overhead

garage door industry has dictated the use of smaller sections, i.e. twenty-one

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Appeal No. 2008-1619 Appl. No. 101836,805

inches or less, with larger radius tracks when attempting to arrive at the best

working solution for a garage door" (First Jelli Decl. m6). As such, the

Appellant's asserted discovery is based on a correlation between the radius

of the tracks and the height of the panels such that "[tlhe operational

performance of a twenty eight inch steel raised panel door section for

instance, is not adversely affected as it travels through the radius of a fifteen

inch conventional door track" (App. Br. 20, First Jelli Decl. m7). Claim 1,

however, is directed only to a door section and does not recite tracks of a

specific radius or even recite tracks at all.' Thus, the evidence presented by

the Appellant as to skepticism of others is not commensurate in scope with

the claims. The declarants were not stating that they were skeptical that

twenty-eight inch panel sections would work on any type of garage door,

rather they were stating their skepticism as to whether the claimed door

panel height would work for a door with conventional fifteen inch radius

tracks. The claims do not, however, recite the twenty-eight inch panel door

sections in combination with a specific radius track.

Each of the declarants further states that response to the raised panel

garage door with three twenty-eight inch door sections has been

"enthusiastic" with comments touting "how uniquely different the door

looks from other garage doors" (Mohler Decl. ¶lo; Folk Decl. m11; Schults

Decl. m11; Matuszek Decl. m11; Clem Decl. m11). Evidence of commercial

success for a claimed invention of a utility patent application cannot be

shown, however, by industry reaction to the aesthetic appearance of the

2 In fact, none of the claims on appeal recites tracks. 17

Appeal No. 2008-1619 Appl. No. 101836,805

claimed invention. Such evidence is too subjective to serve as reliable

objective evidence of secondary considerations of non-obviousness.

Further, the ornamental appearance of a product is the purview of the design

patent law. Were we to allow secondary considerations of non-obviousness

to be based on the industry's reaction to the ornamental appearance of the

claimed invention, we would be blurring the distinction between design and

utility patent protection. Objective evidence of secondary considerations of

non-obviousness should be tied to the functional aspects of the claimed

invention for a utility patent application. See Cable Elec. Products, Znc. v.

Genmark, Znc., 770 F.2d 1015, 1027 (Fed. Cir. 1985) ("[Flor commercial

success of a product embodying a claimed invention to have true relevance

to the issue of non-obviousness, that success must be shown to have in some

way been due to the nature of the claimed invention, as opposed to other

economic and commercial factors unrelated to the technical quality of the

patented subject matter") (citing Strato$ex, Znc. v. Aeroquip Corp., 7 13 F.2d

1530 (Fed. Cir. 1983)).

The Appellant's own declaration further states that "the substantially

twenty-eight inch finished height of the door section also achieves desired

and unexpected results of enhanced aesthetic appearance, simpler and more

cost effective installation, and improved resistance to moisture" (First Jelli

Decl. ¶9). For the reasons provided above, we hold that unexpected results

for the claimed invention of a utility patent application cannot be based on

enhanced aesthetic appearance, which is a subjective factor and one more

properly reserved for the confines of design patent protection.

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With respect to the other purported unexpected results, although the

declaration goes on to explain why the installation is more cost effective

than traditional doors and why the three twenty-eight inch panels door

construction provides improved resistance to moisture, the declaration fails

to sufficiently show that these results were at all unexpected. On the

contrary, it seems to flow naturally that a door made of fewer parts would be

less costly to manufacture and would provide fewer joints through which

moisture could enter. Further, the unexpected results, which are based on a

garage door having three twenty-eight inch panel sections, are not

commensurate in scope with claim 1, which recites only a single door

section having a finished height of twenty-eight inches and not a garage door

having three such panel sections.

The Appellant also attests to the fact that he "discovered that a three

panel, 28-inch section travels through standard radius tracks in a dzferent

manner, and surprisingly, does so smoothly" (App. Br. 20, citing First Jelli

Decl. ¶7). The Appellant contends that "[tlhis declaration clearly indicates

surprising and unexpected results in the operation, and significant and

objectively quantified improvement in production capabilities and reduced

labor costs in a mature industry" (App. Br. 22). We find this evidence

equally unpersuasive of unexpected results because the evidence lacks the

necessary nexus to the claimed invention. The claims do not recite three

twenty-eight inch panel door sections in combination with standard radius

tracks.

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Some of the declarants also offered evidence of actual sales of steel

raised panel and/or steel carriage garage doors with three twenty-eight inch

door sections and estimates as to future sales (Folk Decl., ¶lo3, Schults

Decl., ¶lo4, Matuszek Decl., ¶lo5, and Clem Decl., ¶lo6). Again, the

evidence is not commensurate with the claimed invention. Claim 1 does not

recite a steel garage door with three twenty-eight inch door sections. Rather,

claim 1 recites a single door section with a finished height of substantially

twenty-eight inches. Even if we were to find a sufficient nexus between this

evidence of commercial success and the claimed invention, the third-party

declarants have failed to provide persuasive evidence as to market share so

as to put the evidence of gross sales figures into perspective in the context of

the particular market at hand.

The Appellant himself also purported to show evidence of commercial

success. In a first declaration, the Appellant attested that "since our first

offers for sale of the three section raised panel garage door in July 2001,

3 Mr. Folk attests that sales by his company for the first two years have reached approximately $120,000 annually with an estimate that sales could ultimately reach levels of $600,000 per year. 4 Mr. Schults attests that sales by his companies for the first two years have reached approximately ten units per month with an estimate that sales could ultimately reach levels of two to three hundred units per year. 5 Mr. Matuszek attests that sales by his company for the first twenty months have reached approximately 75 units with an estimate that sales could ultimately reach levels of 250 per year. 6 Mr. Clem, who is the National Sales Manager for First United Door Technologies, L.L.C., the real party-in-interest, attests that sales by his company for the first two years have reached approximately $2,000,000 with an estimate that sales could ultimately reach levels of $50 Million per year.

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over four thousand doors have been sold" (First Jelli Decl. m11). The

Appellant further stated that "[s]ales of the product are growing at a rate of

more than 25% annually" (First Jelli Decl. m11). The Appellant attested that

"[iln Southern California for instance, eighteen of the top twenty builders

will be using the products on one or more of their new home subdivisions"

(First Jelli Decl. m11).

The Appellant submitted a second declaration which purported to

show "significant increased margin of sale for the 28-inch panel door while

showing static or declining sales of other doors sold by Applicant's

company" (App. Br. 22, citing Declaration Under 37 C.F.R. 5 1.132 of John

F. Jelli dated January 4, 2005 ("Second Jelli Decl.")). This second

declaration included a chart which compares sales of Appellant's three panel

section door to sales of Appellant's other overhead garage doors having four

or more panels section (Second Jelli Decl. m12).

The Appellant's evidence of gross sales as an indication of

commercial success is weak, at best. The Appellant's proof of unit sales

does not indicate whether the numbers sold were a substantial quantity in the

relevant market. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (without

evidence that the sales are a substantial quantity in the relevant market, "bare

sales numbers" are a "weak showing" of commercial success, if any); In re

Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) ("[I]nformation

solely on numbers of units sold is insufficient to establish commercial

success."); Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150-51 (Fed. Cir.

1983) ("The evidence of commercial success consisted solely of the number

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of units sold. There was no evidence of market share, of growth in market

share, of replacing earlier units sold by others or of dollar amounts, and no

evidence of a nexus between sales and the merits of the invention. Under

such circumstances, consideration of the totality of the evidence, including

that relating to commercial success, does not require a holding that the

invention would have been nonobvious at the time it was made to one skilled

in the art."); Sjolund v. Musland, 847 F.2d 1573, 1582 (Fed. Cir. 1988)

("Nor could the jury, from the bare evidence of units sold and gross receipts,

draw the inference that the popularity of the [sold units] was due to the

merits of the invention.") (citing Cable Elec. Prods. v. Genmark, Znc., 770

F.2d 1015, 1026-27 (Fed. Cir. 1985) and Kansas Jack, Znc., 7 19 F.2d at

1150-51).

The Appellant attempts to bolster his prior evidence of commercial

success by providing a third declaration containing evidence of market share

from sales of doors having twenty-eight inch panel sections (Declaration

Under 37 C.F.R. 5 1.132 of John F. Jelli dated July 7, 2005) ("Third Jelli

Decl."), ¶¶lo, 11). The evidence purports to show that sales of doors

comprising twenty-eight inch panel sections total $20M as compared to

overall sales in the North American Garage Door Market of roughly $1.6B.

This represents a market share of approximately 1.24%.

We note that FUDT's market share for the steel carriage house market

as compared with the remainder of the garage door industry is only 0.175%.

The Appellant contends that the other sales of steel carriage house doors

with twenty-eight inch panel sections in the market are due to "copyists"

Appeal No. 2008-1619 Appl. No. 101836,805

(Reply Br. 14). The Appellant states that he has "gained information from

sources within the equipment community that a competitor to FUDT has

now invested $9,000,000.00 ($6M for equipment and $3M for building

facility) for the manufacture of steel garage doors having 28" panels" and

that "[b]ecause of the commercial success of the FUDT doors, competitors

are attempting to duplicate FUDT's efforts, regardless of the cost" (Third

Jelli Decl. ¶9). The Appellant has proffered hearsay evidence of possible

copying in the industry that we find to be of questionable reliability and not

probative objective evidence of non-obviousness.7

Regardless of whether we consider 1.24% or 0.175% to be the

relevant market share figure, either market share is sufficiently small

compared to the entire garage door market that they fail to reasonably

demonstrate commercial success of the claimed invention.

The Appellant attempts to more narrowly define the relevant market

to encompass only steel carriage house garage doors so as to inflate the share

of the market held by FUDT. We fail to see why the market should be

defined so narrowly. FUDT's sales of doors having twenty-eight inch door

panel sections are not limited to steel carriage house garage door but also

7 Upon filing of the present application, the Appellant filed a Declaration Under 37 C.F.R. 5 1.102(d) in support of a Petition to Make Special in which the Appellant states that there is an infringing device on the market. This declaration, however, fails to provide any further description of the specifics of the infringing device and provides only that in the Appellant's opinion, at least some of the claims in the application as filed would be infringed by the manufacture, use or sale of the infringing device. Without more, we find that this evidence is insufficient to establish non-obviousness.

23

Appeal No. 2008-1619 Appl. No. 101836,805

include steel raised panel garage doors having three twenty-eight inch panel

sections (Folk Decl. ¶lo, Schults Decl. ¶lo, Matuszek Decl. ¶lo, and Clem

Decl. ¶lo). The Appellant, however, has not provided us with any sales

information for steel raised panel garage doors that demonstrates the market

share of such doors having three twenty-eight inch panel sections. Further,

the relevant market is not limited to steel carriage house doors, because the

claims are not limited to such carriage house doors. Rather, the claims cover

any steel door section, whether raised panel, carriage house, or other door

section. Since the Appellant has not provided us with the total market

figures for all steel garage door sales, and further has not provided us with

the total sales of steel garage doors having a twenty-eight inch panel section,

we cannot determine the market share of the claimed invention in this

relevant market.

The Appellant asserts that "FUDT has captured a huge segment of the

market of 28" panel steel garage doors" (Third Jelli Decl. T11). Assuming

that to be the case, this statement begs the question that if there were other

garage doors on the market also comprising twenty-eight inch panel

sections, what was it about FUDT's doors that made them a success and

where is the nexus between this success and the claimed invention? Could

FUDT's relatively high market share for the same door as offered by others

in the market be due to other factors unrelated to the claimed invention, such

as a better distribution network or a better sales force or industry reputation?

It is not apparent from the evidence presented what reason should be

attributed to FUDT's market share for steel carriage house garage doors

24

Appeal No. 2008-1619 Appl. No. 101836,805

having three twenty-eight inch panel sections when compared to other

companies selling the same door. Further, since both FUDT and these other

companies in the market are all selling doors that fall within the scope of

claim 1, it seems to us that a comparison of FUDT's market share to other

companies is not the relevant inquiry. Rather, the relevant inquiry is to

compare the market share of steel garage doors having twenty-eight inch

panel sections to the overall market for steel garage doors.

If we were to treat the entire North American Garage Door Market as

the relevant market segment, then, as set forth supra, garage doors having

twenty-eight inch panel sections comprise an insignificant portion of this

garage door market. Under this analysis, we find the Appellant's evidence

of commercial success to be weak, and Appellant's showing of market share

in the relevant market to demonstrate that Appellant's claimed invention

does not hold a significant share of the garage door market.

The Appellant's third declaration also purported to show that "these

28-inch panel doors are 'deceivingly difficult to make"' (App. Br. 23,

quoting Third Jelli Decl.). The declaration fails, however, to provide any

explanation as to why three section doors were so difficult to manufacture.

If the Appellant's invention lies in his discovery of the correlation between

the twenty-eight inch height of the door sections and the conventional fifteen

inch radius track, then it is not evident why such a door would be costly to

develop. Without further explanation, this evidence is insufficient to show

non-obviousness.

Appeal No. 2008-1619 Appl. No. 101836,805

The Appellant also asserts that the declarations submitted show a

long-felt and growing need that the claimed twenty-eight inch panel filled

(Reply Br. 8, 11). The declarations, however, fail to sufficiently evidence a

long-felt need in the industry. Establishing long-felt need requires objective

evidence that an art-recognized problem existed in the art for a long period

of time without solution. In particular, the evidence must show that the need

was a persistent one that was recognized by those of ordinary skill in the art.

In re Gershon, 372 F.2d 535, 539 (CCPA 1967). The declarations submitted

by the Appellant do not show that the need for a different looking door was a

persistent one or that others tried to meet the need and failed. While the

need for a new look to garage doors may have been a market pressure that

existed at the time of the invention, the declarants fail to state how long the

need existed in the industry and whether any attempts to meet the need were

made by others in the industry. "[Llong-felt need is analyzed as of the date

of an articulated identified problem and evidence of efforts to solve that

problem." Texas Instruments, Inc. v. ITC, 988 F.2d 1165, 1178 (Fed. Cir.

1993). As such, we find that the Appellant has failed to set forth sufficient

evidence to establish a long-felt need in the industry.

Obviousness Determination

Having now considered all the evidence presented by Appellant

against obviousness and weighing all the evidence anew, it is our conclusion

that the evidence for obviousness outweighs the evidence against

obviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the court

balanced the Patent Office's case against the strength of appellant's objective

26

Appeal No. 2008-1619 Appl. No. 101836,805

evidence of non-obviousness.) Based on our review and consideration of all

of the evidence before us, we conclude that the subject matter of claim 1

would have been obvious to one having ordinary skill in the art at the time

the invention was made in view of the prior art. The Appellant fails to

present separate arguments for patentability of claims 6,7, 12, 13, and 15.

Thus, these claims fall with claim 1. As such, we sustain the Examiner's

rejection of claims 1, 6, 7, 12, 13, and 15 under 35 U.S.C. 5 103(a) as

unpatentable over Martin in view of Dykes and/or Geoffrey.

CONCLUSION

We conclude the Appellant has failed to show the Examiner erred in

rejecting claims 1, 6,7, 12, 13, and 15 under 35 U.S.C. 5 103(a) as

unpatentable over Martin in view of Dykes and/or Geoffrey.

DECISION

The decision of the Examiner to reject claims 1, 6, 7, 12, 13, and 15 is

affirmed.

No time period for taking any subsequent action in connection with

this appeal may be extended under 37 C.F.R. 5 1.136(a). See 37 C.F.R.

5 1.136(a)(l)(iv) (2007).

AFFIRMED

vsh

Appeal No. 2008-1619 Appl. No. 101836,805

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